Trade mark use through model designation?

The Higher Regional Court (OLG) Frankfurt a.M. had to decide whether the use of the registered trade mark "SAM" as a model designation for a garment also constitutes trade mark use of this name and thus a trade mark infringement.

The proprietor of the national word mark "SAM", which has been registered since the early nineties, inter alia in class 25 for "articles of clothing", took action against the use of her trade mark in the context of a model designation by a competitor. The operator of an online sales portal for fashion offered on the Internet a coat under the designation "WOLLMANTEL SAM" and a jacket under the designation "WOLLBLAZER SAM". The designations were each located next to a photograph of the relevant garment.

Court's decision

The Higher Regional Court (OLG) Frankfurt a.M. decided byjudgment of 04.12.2014 – Az. 6 U 141/14 – that the use of a first name as a model designation for a garment generally also constitutes trade mark use. Therefore, the applicant's claim for a prohibitory injunction should be granted.

Something else could only apply if, on the basis of customary practice in the trade, the public had become accustomed to seeing such first names as mere order designations. This was not the case here, however, since the consumer in the contested use of the mark "SAM" does not see merely a model designation, but also at the same time a reference to the origin of the garment from a particular undertaking. The public assumes that the "Wollmantel SAM" is always to be attributed to the trade mark proprietor.

Conclusion

The present case clearly demonstrates that the use of third-party marks even as model designations for garments generally constitutes trade mark infringement.